What are the grounds for seeking inter partes review limited to compared with post-grant review?
The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
- In contrast, the grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3).
- Such grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications.
- Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.
The answer to this question can be found in the PTO supplement known as, “Inter Partes, Post Grant, and Covered Business Method Review Final Rules”. This supplement covers New Trial Proceedings. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam.
This question and answer comes from 35 U.S.C. 311 of the supplement. The following is a brief summary of section 35 U.S.C. 311:
35 U.S.C. 311: Inter partes review
The AIA provides that a person who is not the owner of a patent may file a petition with the Office to institute an inter partes review of the patent.